DETAILED ACTION
Pending Claims
Claims 2, 3, and 6-16 are pending.
Priority
The instant application, filed June 27, 2024 is:
a continuation of U.S. Patent Application No. 17/697,745, filed March 17, 2022 (now U.S. Patent No. 12,049,574), which is
a continuation of U.S. Patent Application No. 17/198,504, filed March 11, 2021 (now U.S. Patent No. 11,629,276), which is
a divisional of U.S. Patent Application No. 14/961,513, filed December 7, 2015, (now U.S. Patent No. 10,947,428), which is a
continuation of U.S. Patent Application No. 13/918,021, filed June 14, 2013, now abandoned, which is
a continuation-in-part of U.S. Patent Application No. 13/315,518, filed December 9, 2011, now abandoned, which is
a continuation-in-part of U.S. Patent Application No. 12/949,878, filed November 19, 2010, now abandoned.
Applicant states that this application is a continuation or divisional application of the prior-filed application. A continuation or divisional application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains matter not disclosed in the prior-filed application (see new matter rejection below). The application is currently being treated as a continuation-in-part with an effective filing date of June 27, 2024.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 6, 2026 has been entered.
Election/Restrictions
Group I (claims 2, 3, 6 & 7 (and cancelled claims 1, 4 & 5)) has been constructively elected by original presentation for prosecution on the merits.
Claims 8-11 (Group II) and 12-16 (Group III) are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Response to Amendment
The rejection of claims 4 and 5 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, has been rendered moot by the cancellation of these claims.
The rejection of claim 4 under 35 U.S.C. 102(a)(1) as being anticipated by Desai et al. (US 2016/0083633 A1) has been rendered moot by the cancellation of this claim.
The rejection of claims 2, 3, 6, and 7 under 35 U.S.C. 102(a)(1) as being anticipated by Desai et al. (US 2016/0083633 A1) has been overcome by amendment.
The rejection of claim 5 under 35 U.S.C. 103 as being unpatentable over Desai et al. (US 2016/0083633 A1) has been rendered moot by the cancellation of this claim.
The rejection of claims 2, 3, 6, and 7 under 35 U.S.C. 103 as being unpatentable over Desai et al. (US 2012/0129980 A1) in view of Agarwal et al. (US 2008/0188609 A1) and Mowrer et al. (US 2010/0297357 A1) has been overcome by amendment.
The rejection of claims 2, 3, 6, and 7 under 35 U.S.C. 103 as being unpatentable over Desai et al. (US 2012/0129980 A1) in view of Agarwal et al. (US 2008/0188609 A1) and Kaneko et al. (JP 2012-149109 A) has been overcome by amendment.
The rejection of claims 4 and 5 under 35 U.S.C. 103 as being unpatentable over Desai et al. (US 2012/0129980 A1) in view of Agarwal et al. (US 2008/0188609 A1), Mowrer et al. (US 2010/0297357 A1), and Ohtani et al. (US 2012/0258314 A1) has been rendered moot by the cancellation of these claims.
The rejection of claims 4 and 5 under 35 U.S.C. 103 as being unpatentable over Desai et al. (US 2012/0129980 A1) in view of Agarwal et al. (US 2008/0188609 A1), Kaneko et al. (JP 2012-149109 A), and Ohtani et al. (US 2012/0258314 A1) has been rendered moot by the cancellation of these claims.
The rejection of claim 4 on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,043,768 in view of Desai et al. (US 2012/0129980 A1) and Kaneko et al. (JP 2012-149109 A) has been rendered moot by the cancellation of this claim.
The rejection of claims 2, 3, 6, and 7 on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,043,768 in view of Desai et al. (US 2012/0129980 A1) and Kaneko et al. (JP 2012-149109 A) has been overcome by amendment.
The rejection of claim 5 on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,043,768 in view of Desai et al. (US 2012/0129980 A1), Kaneko et al. (JP 2012-149109 A), and Ohtani et al. (US 2012/0258314 A1) has been rendered moot by the cancellation of this claim.
The rejection of claim 4 on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12,031,064 in view of Desai et al. (US 2012/0129980 A1) and Kaneko et al. (JP 2012-149109 A) has been rendered moot by the cancellation of this claim.
The rejection of claims 2, 3, 6, and 7 on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12,031,064 in view of Desai et al. (US 2012/0129980 A1) and Kaneko et al. (JP 2012-149109 A) has been overcome by amendment.
The rejection of claim 5 on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12,031,064 in view of Desai et al. (US 2012/0129980 A1), Kaneko et al. (JP 2012-149109 A), and Ohtani et al. (US 2012/0258314 A1) has been rendered moot by the cancellation of this claim.
The rejection of claims 4 and 5 on the ground of nonstatutory double patenting as being unpatentable over claims 2-3 of U.S. Patent No. 11,629,276 in view of Agarwal et al. (US 2008/0188609 A1) and Kaneko et al. (JP 2012-149109 A) has been rendered moot by the cancellation of these claims.
The rejection of claims 2, 3, 6, and 7 on the ground of nonstatutory double patenting as being unpatentable over claims 2-3 of U.S. Patent No. 11,629,276 in view of Agarwal et al. (US 2008/0188609 A1) and Kaneko et al. (JP 2012-149109 A) has been overcome by amendment.
The rejection of claims 4 and 5 on the ground of nonstatutory double patenting as being unpatentable over claims 2-3 of U.S. Patent No. 11,629,276 in view of Agarwal et al. (US 2008/0188609 A1) and Mowrer et al. (US 2010/0297357 A1) has been rendered moot by the cancellation of these claims.
The rejection of claims 2, 3, 6, and 7 on the ground of nonstatutory double patenting as being unpatentable over claims 2-3 of U.S. Patent No. 11,629,276 in view of Agarwal et al. (US 2008/0188609 A1) and Mowrer et al. (US 2010/0297357 A1) has been overcome by amendment.
Claim Rejections - 35 USC § 112, 1st paragraph (a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2, 3, 6, and 7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 2, 3, 6, and 7, independent claim 2 features: (d) 0.4% by weight to 1.3% by weight of 1,10-phenanthroline and/or a positive amount up to 0.6% by weight of calcium strontium phosphosilicate.
Example 4 in Table 10 of the instant specification and examples 4 & 7-10 in Table 11 of the instant specification support embodiments formulated with 1,10-phenanthroline. The use of 1,10-phenanthroline is only presented in these exemplary embodiments, and the instant specification is silent regarding a range associated with this material. Example 4 in Table 10 and Example 4 in Table 11 feature approximately 1.3 wt% of 1,10-phenanthroline. Examples 7-10 in Table 11 feature approximately 0.52 wt% of 1,10-phenanthroline. The examples support these specific amounts. However, the examples fail to adequately support the full range of “0.4% by weight to 1.3% by weight”. The examples also fail to adequately support the end point of “0.4% by weight”.
Examples 7-10 in Table 11 of the instant specification support embodiments formulated with calcium strontium phosphosilicate. The use of calcium strontium phosphosilicate is only presented in these exemplary embodiments, and the instant specification is silent regarding a range associated with this material. Examples 7-10 in Table 11 feature approximately 0.52 wt% of calcium strontium phosphosilicate. The examples fail to adequately support the full range of “a positive amount of up to 0.6% by weight”. The examples also fail to adequately support the end point of “0.6% by weight”.
This is a new matter rejection. Claims 3, 6, and 7 are rejected because they are dependent from claim 2. Furthermore, it is important to note that parent applications listed in the priority chain also fail to adequately support these limitations.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 2, 3, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Desai et al. (US 2016/0083633 A1).
Regarding claims 2, 3, 6, and 7, Desai et al. disclose: (2) a one-component composition (Example 4 in Table 10; Examples 4 & 7-10 in Table 11) comprising:
(a) 2% by weight to 40% by weight of an epoxy-capped flexibilizer comprising a reaction product of reactants comprising (i) an epoxy compound, (ii) an anhydride and/or a diacid and (iii) a polyol (Example 4 in Table 10; Examples 4 & 7-10 in Table 11: see “Epon 828/Tetrathane 650/HHPA 31”-);
(b) 3% by weight to 25% by weight of a heat-activated latent curing agent comprising a guanidine, a substituted guanidine, a substituted urea, a melamine resin, a guanamine derivative, a cyclic tertiary amine, an aromatic amine and/or mixtures thereof (Example 4 in Table 10; Examples 4 & 7-10 in Table 11: see “Dyhard 100SF 41” and “Diuron 46”);
(c) a positive amount up to 75% by weight of rubber particles having a core/shell structure (Example 4 in Table 10; Examples 4 & 7-10 in Table 11: see “Kane Axe MX-153 30”);
(d) 0.4% by weight to 1.3% by weight of 1,10-phenanthroline and/or a positive amount up to 0.6% by weight of calcium strontium phosphosilicate-based corrosion inhibitor (Example 4 in Table 10; Examples 4 & 7-10 in Table 11: see “1,10-Phenanthroline 34” and “Halox SW 111 35”);
(e) an epoxy-imidazole adduct (Example 4 in Table 10; Examples 4 & 7-10 in Table 11: see “Ajicure PN-40 43”-); and
an epoxy compound or an epoxy resin not incorporated into or reacted as part of component (a) and/or an epoxy carrier resin incorporated into component (c) (Example 4 in Table 10; Examples 4 & 7-10 in Table 11: see “Kane Axe MX-153 30”);
wherein % by weight is based on total weight of the composition;
(3) wherein the epoxy compound reactant (i) of the epoxy-capped flexibilizer comprises Bisphenol A diglycidyl ether, phenyl diglycidyl ether, or combinations thereof (Example 4 in Table 10; Examples 4 & 7-10 in Table 11: see “Epon 828/Tetrathane 650/HHPA 31”-);
(6) wherein the composition is formulated to cure at a temperature of 120°C to 140°C within 20 minutes or less (Example 4 in Table 10; Examples 4 & 7-10 in Table 11: see “130oC for 10 minutes”-); and
(7) wherein the composition is formulated to cure following exposure to thermal conditions or actinic radiation (Example 4 in Table 10; Examples 4 & 7-10 in Table 11: see “130oC for 10 minutes”-).
The exemplary embodiments fail to disclose: (2, 3, 6 & 7) the epoxy-imidazole adduct in an amount of 3% by weight to 25% by weight based on total weight of the composition. Rather Example 4 in Table 11 features approximately 2.6 wt%, which is just below the claimed range. In light of this, it has been found that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close – see MPEP 2144.05. Furthermore, the general teaching of Desai et al. disclose that the heat-activated latent curing agent, including those comprising the instantly claimed adduct (see paragraphs 0098 & 0110), can be provided in the instantly claimed amount (see paragraph 0097).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the exemplary embodiments of Desai et al. with the instantly claimed amount of epoxy-imidazole adduct (3% by weight to 25% by weight based on total weight of the composition) because: (a) Example 4 in Table 11 of Desai et al. features approximately 2.6 wt%, which is just below the claimed range; and (b) it has been found that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Furthermore: (c) the general teaching of Desai et al. disclose that the heat-activated latent curing agent, including those comprising the instantly claimed adduct, can be provided in the instantly claimed amount.
Claims 2, 3, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Desai et al. (US 2012/0129980 A1) in view of Agarwal et al. (US 2008/0188609 A1), Mowrer et al. (US 2010/0297357 A1), Visser et al. (US 2012/0025142 A1) and Ohtani et al. (US 2012/0258314 A1).
Regarding claims 2, 3, and 7, Desai et al. disclose: (2) a one-component composition (Examples 1 & 2 in Table 5) comprising:
(a) 2% by weight to 40% by weight of an epoxy-capped flexibilizer comprising a reaction product of reactants comprising (i) an epoxy compound, (ii) an anhydride and/or a diacid and (iii) a polyol (Examples 1 & 2 in Table 5: see “Epon 828/Tetrathane 650/HHPA 21”);
(b) 3% by weight to 25% by weight of a heat-activated latent curing agent comprising a guanidine, a substituted guanidine, a substituted urea, a melamine resin, a guanamine derivative, a cyclic tertiary amine, an aromatic amine and/or mixtures thereof (Examples 1 & 2 in Table 5: see “Dicyandiamide 25” and “Diuron 26”);
(c) a positive amount up to 75% by weight of rubber particles having a core/shell structure (Examples 1 & 2 in Table 5: see “Kane Ace MX-153 20”); and
an epoxy compound or an epoxy resin not incorporated into or reacted as part of component (a) and/or an epoxy carrier resin incorporated into component (c) (Examples 1 & 2 in Table 5: see “Kane Ace MX-153 20 and “Epon 828 1”);
wherein % by weight is based on total weight of the composition;
(3) wherein the epoxy compound reactant (i) of the epoxy-capped flexibilizer comprises Bisphenol A diglycidyl ether, phenyl diglycidyl ether, or combinations thereof (Examples 1 & 2 in Table 5: see “Epon 828/Tetrathane 650/HHPA 21”); and
(7) wherein the composition is formulated to cure following exposure to thermal conditions or actinic radiation (paragraph 0012).
Desai et al. fail to disclose: (2, 3 & 7) (d) 0.4% by weight to 1.3% by weight of 1,10-phenanthroline and/or a positive amount up to 0.6% by weight of calcium strontium phosphosilicate (corrosion inhibitor). Rather, the general teachings of Desai et al. contemplate the use of additives (see paragraphs 0116-0121). The general teachings of Desai et al. also disclose that their composition is suitable for use with various substrates, including metal substrates (see paragraph 0013).
Agarwal et al. disclose a similar one-component rubber-modified epoxy-based based composition (see paragraph 0006; claims 1-23) used with metal substrates (see Abstract; paragraph 0077). Agarwal et al. also contemplate the use of additives (see paragraphs 0071-0076) and demonstrate that corrosion inhibitors are recognized in the art as suitable additives for this type of epoxy-based composition (see paragraph 0075). Mowrer et al. demonstrate that strontium zinc phosphosilicate is recognized in the art as a suitable corrosion inhibitor for epoxy-based formulations (see Abstract; paragraph 0099). In addition, Visser et al. demonstrate that strontium zinc phosphosilicate and calcium strontium phosphosilicate are recognized in the art as equivalent phosphosilicate corrosion inhibitors for epoxy-based formulations (see Abstract; paragraphs 0014-0018 & 0028). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07. It has also been found that combining or substituting equivalents known for the same purpose is prima facie obvious – see MPEP 2144.06. Furthermore, Mowrer et al. disclose that the corrosion inhibitor can be provided in any suitable amount of up to 20 wt% (see paragraph 0099). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the at before the effective filing date of the claimed invention to formulate the composition of Desai et al. with the instantly claimed calcium strontium phosphosilicate (and amount thereof) because: (a) Desai et al. contemplate the use of additives and disclose that their composition is suitable for use with various substrates, including metal substrates; (b) Agarwal et al. disclose a similar one-component rubber-modified epoxy-based based composition used with metal substrates; (c) Agarwal et al. also contemplate the use of additives and demonstrate that corrosion inhibitors are recognized in the art as suitable additives for this type of epoxy-based composition; (d) Mowrer et al. demonstrate that strontium zinc phosphosilicate is recognized in the art as a suitable corrosion inhibitor for epoxy-based formulations; (e) Visser et al. demonstrate that strontium zinc phosphosilicate and calcium strontium phosphosilicate are recognized in the art as equivalent phosphosilicate corrosion inhibitors for epoxy-based formulations; (f) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination; and (g) it has also been found that combining or substituting equivalents known for the same purpose is prima facie obvious. Furthermore: (h) Mowrer et al. disclose that the corrosion inhibitor can be provided in any suitable amount of up to 20 wt%; and (i) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
The combined teachings of {Desai et al., Agarwal et al., Mowrer et al. & Visser et al.} are as set forth above and incorporated herein. The primary teachings of Desai et al. use dicyandiamide (cyanoguanidine) in combination with a urea-based accelerator (see Examples 1 & 2 in Table 5; see also paragraph 0095). Accordingly, they fail to disclose dicyandiamide (cyanoguanidine) in combination with (2, 3 & 7) 3% by weight to 25% by weight of an epoxy-imidazole adduct, based on total weight of the composition.
Ohtani et al. also disclose a one-component epoxy resin composition cured with dicyandiamide (see Abstract; paragraphs 0058-0064). Similar to Desai et al., the dicyandiamide of Ohtani et al. is used in combination with an accelerator (see paragraphs 0065-0071). Ohtani et al. establish the both urea derivatives and epoxy resin amine adduct compounds are recognized in the art as suitable accelerators for the curing of one-component epoxy resin compositions with dicyandiamide (see paragraph 0069). Specifically, the epoxy amine adduct compounds of Ohtani et al. include an epoxy resin adduct compound of 2-ethyl-4-methylimidazole (PN-23) (see paragraph 0120). In light of this, it has been found that combining or substituting equivalents known for the purpose is prima facie obvious – see MPEP 2144.06. Ohtani et al. further disclose that the accelerator can be provided in amounts of between 2 wt% and 30 wt% (see paragraph 0071; see also Tables 1 & 2). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the composition resulting from the combined teachings of {Desai et al., Agarwal et al., Mowrer et al. & Visser et al.} with the instantly claimed epoxy-imidazole adduct (and amount thereof) because: (a) the primary teachings of Desai et al. use dicyandiamide (cyanoguanidine) in combination with a urea-based accelerator; (b) Ohtani et al. also disclose a one-component epoxy resin composition cured with dicyandiamide in combination with an accelerator; (c) Ohtani et al. establish the both urea derivatives and epoxy resin amine adduct compounds are recognized in the art as suitable accelerators for the curing of one-component epoxy resin compositions with dicyandiamide; (d) specifically, the epoxy amine adduct compounds of Ohtani et al. include an epoxy resin adduct compound of 2-ethyl-4-methylimidazole (PN-23); and (e) it has been found that combining or substituting equivalents known for the purpose is prima facie obvious. Furthermore: (f) Ohtani et al. further disclose that the accelerator can be provided in amounts of between 2 wt% and 30 wt%; and (g) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Regarding claim 6, the combined teachings of {Desai et al., Agarwal et al., Mowrer et al., Visser et al. & Ohtani et al.} are as set forth above and incorporated herein. They fail to explicitly disclose: (6) wherein the composition is formulated to cure at a temperature of 120°C to 140°C within 20 minutes or less. However, the skilled artisan would have expected the composition resulting from the combined teachings of {Desai et al., Agarwal et al., Mowrer et al., Visser et al. & Ohtani et al.} to obviously embrace embodiments capable of curing under these conditions because the composition resulting from the combined teachings of {Desai et al., Agarwal et al., Mowrer et al., Visser et al. & Ohtani et al.} obviously satisfies all of the material/chemical limitations (and amounts thereof) of the claimed invention.
Therefore, the skilled artisan would have expected the composition resulting from the combined teachings of {Desai et al., Agarwal et al., Mowrer et al., Visser et al. & Ohtani et al.} to obviously embrace embodiments capable of curing under the instantly claimed conditions because the composition resulting from the combined teachings of {Desai et al., Agarwal et al., Mowrer et al., Visser et al. & Ohtani et al.} obviously satisfies all of the material/chemical limitations (and amounts thereof) of the claimed invention.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2, 3, 6, and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,043,768 in view of Desai et al. (US 2012/0129980 A1), Agarwal et al. (US 2008/0188609 A1), Mowrer et al. (US 2010/0297357 A1), Visser et al. (US 2012/0025142 A1) and Ohtani et al. (US 2012/0258314 A1).
Regarding claims 2 and 7, patented claim 12 (dependent from patented claims 11 & 1) discloses a heat-curable composition satisfying instantly claimed components (a), (b), (c), and (e), along with the epoxy compound/resin. The teachings of Desai et al., Agarwal et al., Mowrer et al., Visser et al., Ohtani et al. are as set forth above and incorporated herein.
The teachings of Desai et al. demonstrate that the instantly claimed amounts of (a), (b), and (c) are recognized in the art as suitable amounts of (a), (b), and (c) for this type of epoxy-based formulation.
The teachings of Ohtani et al. demonstrate that the instantly claimed amount of (e) is recognized in the art as a suitable amount of (e) for this type of epoxy-based formulation.
The combined teachings of {Agarwal et al. & Mowrer et al.} demonstrate that strontium zinc phosphosilicate (and the relative amount thereof) is recognized in the art as suitable additive for this type of epoxy-based formulation.
The teachings of {Visser et al.} demonstrate that strontium zinc phosphosilicate and calcium strontium phosphosilicate are recognized in the art as equivalent phosphosilicate corrosion inhibitors for epoxy-based formulations.
In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07. It has also been found that combining or substituting equivalents known for the same purpose is prima facie obvious – see MPEP 2144.06.
Regarding claim 3, the composition resulting from the combined teachings obviously embraces the instantly claimed flexibilizer – see “(a)” in that patented composition.
Regarding claim 6, the composition resulting from the combined teachings obviously embraces embodiments capable of curing at the instantly claimed conditions because it obviously all of the material/chemical limitations of the claimed invention.
Claims 2, 3, 6, and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,031,064 in view of Desai et al. (US 2012/0129980 A1), Agarwal et al. (US 2008/0188609 A1), Mowrer et al. (US 2010/0297357 A1), Visser et al. (US 2012/0025142 A1) and Ohtani et al. (US 2012/0258314 A1).
Regarding claims 2 and 7, patented claim 13 (dependent from patented claims 12 & 1) discloses a heat-curable composition satisfying instantly claimed components (a), (b), (c), and (e), along with the epoxy compound/resin. The teachings of Desai et al., Agarwal et al., Mowrer et al., Visser et al., Ohtani et al. are as set forth above and incorporated herein.
The teachings of Desai et al. demonstrate that the instantly claimed amounts of (a), (b), and (c) are recognized in the art as suitable amounts of (a), (b), and (c) for this type of epoxy-based formulation.
The teachings of Ohtani et al. demonstrate that the instantly claimed amount of (e) is recognized in the art as a suitable amount of (e) for this type of epoxy-based formulation.
The combined teachings of {Agarwal et al. & Mowrer et al.} demonstrate that strontium zinc phosphosilicate (and the relative amount thereof) is recognized in the art as suitable additive for this type of epoxy-based formulation.
The teachings of {Visser et al.} demonstrate that strontium zinc phosphosilicate and calcium strontium phosphosilicate are recognized in the art as equivalent phosphosilicate corrosion inhibitors for epoxy-based formulations.
In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07. It has also been found that combining or substituting equivalents known for the same purpose is prima facie obvious – see MPEP 2144.06.
Regarding claim 3, the composition resulting from the combined teachings obviously embraces the instantly claimed flexibilizer – see “(a)” in that patented composition.
Regarding claim 6, the composition resulting from the combined teachings obviously embraces embodiments capable of curing at the instantly claimed conditions because it obviously all of the material/chemical limitations of the claimed invention.
Claims 2, 3, 6, and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-3 of U.S. Patent No. 11,629,276 in view of Agarwal et al. (US 2008/0188609 A1), Mowrer et al. (US 2010/0297357 A1), and Visser et al. (US 2012/0025142 A1).
Regarding claims 2, 3, and 7, with the exception of instantly claimed component (d), the patented claims:
satisfy component (a) of claims (2 & 7) and the amount thereof (see “(a)” in claims 2-3),
satisfy component (b) of claims (2 & 7) and the amount thereof (see “(b)” in claims 2-3),
satisfy component (c) of claims (2 & 7) and the amount thereof (see “(e)” in claims 2-3),
satisfy component (e) of claims (2 & 7) (see “(b)” in claims 2-3) and obviously embrace the amount thereof (see “(b)” in claims 2-3);
satisfy the epoxy compound/resin of claims (2 & 7) (see claims 2-3); and
satisfy the flexibilizer of claim (3) (see claim 3).
The teachings of Agarwal et al., Mowrer et al., and Visser et al. are as set forth above and incorporated herein.
The combined teachings of {Agarwal et al. & Mowrer et al.} demonstrate that strontium zinc phosphosilicate (and the relative amount thereof) is recognized in the art as suitable additives for this type of epoxy-based formulation.
The teachings of {Visser et al.} demonstrate that strontium zinc phosphosilicate and calcium strontium phosphosilicate are recognized in the art as equivalent phosphosilicate corrosion inhibitors for epoxy-based formulations.
In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07. It has also been found that combining or substituting equivalents known for the same purpose is prima facie obvious – see MPEP 2144.06.
Regarding claim 6, the composition resulting from the combined teachings obviously embraces embodiments capable of curing at the instantly claimed conditions because it obviously all of the material/chemical limitations of the claimed invention.
Response to Arguments
Applicant's arguments regarding claim amendment support, priority, and new matter (see pages 5-6 of the response filed August 6, 2026) have been fully considered but they are not persuasive.
Applicant argues that basis for the limitation (d) 0.4% by weight to 1.3% by weight of 1,10-phenanthroline and/or a positive amount up to 0.6% by weight of calcium strontium phosphosilicate “can be found in the application as filed”. The Office respectfully disagrees. As discussed above,
Example 4 in Table 10 of the instant specification and examples 4 & 7-10 in Table 11 of the instant specification support embodiments formulated with 1,10-phenanthroline. The use of 1,10-phenanthroline is only presented in these exemplary embodiments, and the instant specification is silent regarding a range associated with this material. Example 4 in Table 10 and Example 4 in Table 11 feature approximately 1.3 wt% of 1,10-phenanthroline. Examples 7-10 in Table 11 feature approximately 0.52 wt% of 1,10-phenanthroline. The examples support these specific amounts. However, the examples fail to adequately support:
the full range of “0.4% by weight to 1.3% by weight”, and
the end point of “0.4% by weight”.
Examples 7-10 in Table 11 of the instant specification support embodiments formulated with calcium strontium phosphosilicate. The use of calcium strontium phosphosilicate is only presented in these exemplary embodiments, and the instant specification is silent regarding a range associated with this material. Examples 7-10 in Table 11 feature approximately 0.52 wt% of calcium strontium phosphosilicate. The examples fail to adequately support:
the full range of “a positive amount of up to 0.6% by weight”, and
the end point of “0.6% by weight”.
It is suggested that future arguments point to pages and line numbers of the specification for support. Specifically, Applicant should point to where the original disclosure of the instant application supports:
the inventive concept of any range associated with 1,10-phenanthroline;
the full range of “0.4% by weight to 1.3% by weight” associated with 1,10-phenanthroline;
the end point of “0.4% by weight” associated with 1,10-phenanthroline;
the inventive concept of any range associated with calcium strontium phosphosilicate;
the full range of “a positive amount of up to 0.6% by weight” associated with calcium strontium phosphosilicate, and
the end point of “0.6% by weight” associated with calcium strontium phosphosilicate.
Applicant should also point to where the original disclosures of the parent applications (in the priority chain) support these limitations.
Applicant's arguments regarding the rejections based on Desai et al. (US 2016/0083633 A1) (see pages 7-8 of the response filed August 6, 2026) have been fully considered but they are not persuasive. The priority/continuation issue has not been resolved for the reasons set forth above.
Applicant’s argument regarding the rejection based on Desai et al. (US 2012/0129980 A1) (see page 8 of the response filed August 6, 2026) have been fully considered but they are not persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant did not provide an argument regarding the nonstatutory double patenting rejections (see pages 8-9 of the response filed August 6, 2026)
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
August 20, 2026
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